128 F. 751 | U.S. Circuit Court for the District of Western Pennsylvania | 1904
This is an application by the Westinghouse Electric & Manufacturing Compairy for a preliminary injunction against the J efferson .Electric Eight, Heat & Power Company to enjoin infringement of Nikola Tesla patents, Nos. 511,559 and 511,560. These patents were .sustained by the Circuit Court of Appeals for the Sixth Circuit, in,the case of the Dayton Fan & Motor Company v. Westinghouse Electric & Mfg. Co., 118 Fed. 562, 55 C. C. A. 390, by Judge Arclibald, silting in the Eastern District of Pennsylvania, and by Judge Plazel, sitting in the Western District of New York. The Diamond Alcter Company, the maker cf the meter complained of, appears in the present case and resists the grant of a preliminary injunction. It is conceded the meter is an infringement of said patents. All the requisites to entitle the complainant to a preliminary injunction therefore appear. Putnam v. Keystone Co. (C. C.) 38 Eed. 234; Conover v. Mers, 3 Fish. Pat. Cas. 386, Fed. Cas. No. 3,123. The Diamond Meter Company, while conceding the general right of the complainant to an injunction by reason of the foregoing adjudications of these patents, contends it is relieved frOrn the effect thereof by reason of an adverse decree against the complainant in a bill in equity brought by1 it against the Catskill Illuminating & Power Company (C. C. A.) 121 Fed. 831. Bes adjudicata constitutes a valid defense, but the burden of establishing it rests on the respondent. 3 Robinson. §§ 983, 1046. Inasmuch a.s the Diamond Meter Company was not a party to or appeared on the record in that case, but bases its plea of estoppel and res adjudicata on the fact that it defended the same, the law is clear that such defense, in order to constitute an estoppel, must not only have been made by it, ‘but it must have been clone openly and to the knowledge of the other party, and this in order that the estoppel be mutual. La Croix v. Lyons (C. C.) 33 Fed. 439; Herman on Estoppel, p. 157; Bigelow on
“This defendant 4s not informed, save by the allegations in said bill of complaint, whether the alleged suit against the Catskill Illuminating & Power Company was begun, prosecuted, and decided as alleged in said bill of complaint. It therefore denies, on information and belief, that any such proceedings in manner and form alleged were had, and denies that it was formally agreed and undertaken to secure the said Catskill Company, not only against the expense of all legal proceedings in the said alleged suit, but also an loss by reason of any judgment for damages and profits which may be entered against defendant in said alleged suit. And this defendant, therefore, denies that it was privy to said alleged suit against said Catskill Company, and that all questions alleged to have been passed upon in said suit are res adjudicata as between the parties hereto.”
On April 20, 1903, this suit was discontinued. On February 25, 1903, the decision of Judge Facombe, reported at 110 Fed. 377 (C. C.), was reversed by the Circuit Court of Appeals (121 Fed. 831, 58 C. C. A. 167) on grounds which, as will be noted, were successfully met in the later cases in the Sixth and other circuits. On March 21, 1903, which was after the opinion of the Circuit Court of Appeals was announced, but before a reversing decree therein was entered, a letter was addressed by Mr. Seward Davis to Judge Wallace (who had sat in the case in the Court of Appeals), and to complainant’s counsel, resisting an application to withhold sending down the mandate. In such letter this statement is made: “The grounds of complainant’s counsel to you were the importance of the case to the complainant. On .behalf of the defendants it is submitted that the matter is of still greater importance to the Diamond Meter Company, which is the manufacturer of the meter involved herein and which has defended the suit.” In the present case affidavits are presented by the secretary of the Diamond Meter Company who made the affidavit to the answer in the Illinois case above noted, and by the solicitor who filed such answer, setting forth that the Diamond Meter Company assumed the defense of the Catskill Case. There is no allegation, however, in such affidavits, that the Diamond Company informed complainant it was defending the suit or authorized the
In view of the fact that the immediate issue of such injunction might work hardship to innocent users, we will, if desired, hear counsel as to form of decree before entering same.